2009 Intellectual Property Wypadki

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Contents

COPYRIGHT

Copyright law applies to any work that meets 3 requirements:

  • original
  • work of authorship
  • fixed in a tangible medium of expression

Requirements

(1) Originality

The work must be original to qualify for protection. There are two distinct requirements: (1) the work must be independently created by the author (the author must not have just copied from a preexisting source); and (2) the work must possess at least some minimal degree of creativity.

Note:

  • Discovery is not creation.
  • Originality requires that one be the "maker" or "originator" not merely one who discovers and records a fact. However, works containing facts may be copyrighted, if they contain other elements created by the author.
  • Originality will be found in all but a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.
  • A work may be copyrightable even if it incorporates nonoriginal elements.
  • Mere editorial changes do not meet originality requirement.
  • Non-original elements are especially common in two categories of works: 1) derivative works (b/c they are adaptations of preexisting works); and 2) compilations (which may be collections of facts or preexisting works).
  • CR in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work.

Compilations: a work consisting entirely of unprotected elements is copyrightable (such as facts or work created by others) if the author shows the requisite creativity in selecting, coordinating, or arranging those unprotected elements.


Feist Publications v. Rural Telephone Services

Rule: Facts are not copyrightable, but compilations of facts generally are.

Rule: To establish infringement, two elements must be proven: (1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.

Rationale: The originality requirement was not satisfied. Rural's selection of listings for the telephone directory white pages could not be more obvious. It published the most basic information - name, town, and telephone number. For these reasons, it was not protected by copyright.


Meshwerks Inc. v. Toyota Motor Sales

Facts: G & W contracted with Meshworks. Meshworks was to help with digitization and modeling. Meshwerks used measurements and modeling software to generate a digital image resembling a wire frame model. G & W then manipulated the computerized models by adding detial to the frames. Meshwerks claims it contracted only for a single use of its models and that D improperly reused and redistributed the models in other media.

Hold: The images could not be copyrighted; therefore, no infringement took place.

Rationale: Meshwerks' digital wireframe models depict only those unadorned vehicles, having stripped away all lighting, angle, perspective and "other indgredients" associated with an original expression. Although a considerable amount of time, effort, and skill went into making the digital models; the assessment of the originality of a work for copyright protection is limited to the final product, not the process.


Paul Morelli Design v. Tiffany and Co.

Facts: Morelli was refused CR registration for its jewelry. It nevertheless sued for infringement. Morellia moved for a new trial after the jury found that evidence failed to establish copyrightability.

Hold: The court found that the jury had everything it needed to render a proper verdict.

Rationale: The jury considered an array of evidence, including: carefully set forth legal definitions of originality and creativity, inspection of the Morelli and Tiffany jewelry during trial and deliberations, extensive tesitmony from witnesses about origin, design, elements, and manufacture of both.

Rule: Attractiveness, commercial sucess and substantial efforts are not factors to be considered in deciding wehther a work is original.


(2) Works of Authorship

CR applies only to works of authorship. It applies without regard to artistic merit and is not limited to a particular category of creative work.

Note:

  • The requirement that something be a work of authorship does exclude some fruits of human creativity such as conversation (witty remarks).
  • Must be a product of human authorship.


(3) Fixed in a Tangible Medium of Expression

Fixation requirement - a work is fixed "when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiantly permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than a transitory duration." (CR Act of 1976)


Excluded Subject Matter

(1) Ideas

CR does not protect ideas, no matter how original the idea is.

Types of Ideas:

(a) Concepts: parade with floats, game show or contest

(b) Solutions: Rules for a game

(c) Building Blocks: plot/theme of a novel

Abstractions Test - It is okay to copy general elements of a story/play, as long as you express them in a different form. To copy at a more specific level is taking protected expression.

Merger Doctrine - In some cases, an idea can only be expressed in one or a few ways. To the extent that the idea constrains its expression, the expression is unprotected. (Ex. box of cinnamon tea is likely to show pictures of cinnamon sticks - such depictions are not protected)

Note:

  • Scenes a faire - elements of a work are unprotected if they are commonly found in works of that genre. (villain that cackles)

(2) Functional Aspects

CR does not protect functional aspects of works: procedure, process, system, or method of operation.

  • Note: functional elements may be patentable

Basic issue is often whether an element is creative (belonging in the realm of CR) or functional (belonging in the realm of patent.

  • Note: a work may be functional and still have protected creative expression. (Ex. lamp base functions to hold lamp, but lamp base composed of dancer statuette is protectable by CR)

Instructions and Rules

Words, pictures, and symbols can be functional.

Ex. instructions for assembling a bike, cooking recipes, etc.

  • Note: Ask - Whether there are alternative ways to implement the functional purpose of the work? If there are many different ways to write the recipe or the instructions, then the set of instructions would be deemed a protected expression.

(3) Useful Articles

An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.

Ex. Clothing - generally barred from CR

Note:

  • CR does apply to uniqurely designed fabric (including the label on your jeans)
  • CR does apply to jewelry and some belt buckles

(4) Infringing Works

PATENT

SUBSTANTIVE STANDARDS FOR PROTECTION

An inventor is entitled to a patent only if it is:

  1. New, but an invention is not new if it is subject to:
    1. anticipation- i.e. the same invention is already in public use or has been published
    2. priority- i.e. someone invented the same invention
    3. deviation- inventor learned of the invention from someone else
    4. statutory bars- to be new, the inventor must file no later than she (or someone else) published, publicly uses, or offers for sale the invention.
  2. Useful
  3. nonobvious
    1. if the invention would be obvious to someone in the field, in light of everything published or public use, it is obvious.

Novelty

The invention must be new at the time of invention. 35 USC § 102 contains the rules regarding anticipation, priority, and derivation.

Anticipation

Anticipation bars a patent for an invention that was already publicly known on the applicant's date of invention.

  • Anticipation includes an invention that was known to the public or in public use anywhere in the United States, or one that has been patented or published anywhere. Note the different geographic scopes for use vs. publication.
  • to be new, the patent must not be referenced in the prior art (all things publicly known or published)that anticipates the invention
    • to be an anticipation, the reference in the prior art must contain all elements of the claimed invention
    • even if the inventor is unaware of the publication or public use, it is still unpatentable
    • the publication need not be widespread
  • keep in mind the critical date for judging novelty is the date of invention; if the date of invention is before the date of the publication, novelty is not lost.
    • three different ways for judging the date of invention
      • date of conception (fully conceived of the invention in its operable form), as long as inventor then procedded to dillegently make the invention or file an application
      • absent a date of conception, invention occurs on reduction to practice: when the invention was made and tested
      • if the date of reduction to practice cannot be proven, the date of the filing is the date of invention

nonpublic use, use of the invention in another country, or an unpublished writing would not bar a patent for novelty (though there could be some priority or derivation issues)

To be anticipated, the reference in the prior art must disclose all elements of the invention. Put another way, every element of the claimed invention must be found in a single reference for the invention to be anticipated

  • example- A claim involving elements A, B, and C is not anticipated even though there is a prior art reference with elements A and B and a prior art reference with B and C
Inherency

under this doctrine, references include elements that, although not expressly stated, are necessarily present in the product or process described

  • example- an alloy that has been patented cannot be patented again when new uses are discovered
  • serves to guard against double patenting

However, a new process to make an old device is novel

Derivation

Only the inventor is entitled to a patent. Even if the inventor freely discloses an invention and has no plans to patent it themselves, someone who merely learns of the invention cannot get a patent.

Priority

All jurisdictions outside of the United States follow the first to file rule- if there are two pending patent applications, priority is given to the first to file.

United States follows the first to invent system.- § 102(g) RULE: first inventor to reduce his invention to practice (either actually, by making and testing the invention, or constructively, by filing a patent application) has priority; unless 1) that inventor abandonned, supressed or concealed the invention, or 2) the other inventor conceived the invention (and proceeded with reasonable dilligence toward making and patenting it) before the competing inventor had conceived the invention.

  • conception is the formation in mind of inventor, of definite and permanent idea of complete and operative

invention, as it is to be applied in practice.

  • Invention starts with “conception” and is completed upon “reduction to practice”
  • Reduction to practice can be actual , by building and testing a physical embodiment demonstrating ‘that the claimed invention work for its intended purpose, or constructive , by filing a patent application.

Priority rules in practice.

First to RTP is first to invent. Filing date is presumed invention date.

  • BUT, an inventor can use evidence to establish a pre-filing invention date
    • i.e., RTP will count as invention date

Second to RTP may nonetheless prevail by proving:

  • conception prior to other’s conception, and
  • diligent effort toward actual or constructive RTP from date prior to other’s conception

The first inventory by actual RTP date loses that date for priority purposes if they abandon, suppress, or conceal the invention.

  • The inventor thereby having lost benefit of actual RTP is entitled to the resumption date as the

invention date.

  • Once you stop diligent efforts to RTP, you also lose conception date (i.e., conception date =

resumption date if ceased diligent efforts). If an inventor’s conception is derived from another person, that other person is entitled to priority, regardless of who reduced the invention to practice.

Limitations on priority

  • Activity outside the U.S. cannot be relied upon to establish conception or RTP dates.
  • Evidence of conception and RTP dates must be corroborated. Testimony of the inventor’s

recollection alone is legally insufficient to establish conception or RTP dates.

Loss of Right (§102(b))

once an invention becomes public knowledge, the inventor has one year to file her application

  • this can be triggered by a patent or publication in the US or a foregin country or in public use or on sale in the United States.
  • Can be triggered by others or the inventor herself.
  • this rule prevents an inventor form delaying an application with the hopes of gaining a longer period of protection.
  • many other countries are less forgiving, and once an invention is disclosed to the public, it cannot be patented.
  • Again, the inventor does not have to be aware of the publication in order for the one year clock to start ticking.
  • secret use of the invention for commercial purposes is deemed a public use.
  • By contrast, experimental use by the inventor is not public use- see City of Elizabeth . Nicholson Pavement Co.

City of Elizabeth v. Nicholson Pavement Co.

  • inventor used his new and improved wooden pavement on a public toll road for six years
  • however, the purpose of the use was to test the pavement's usefulness and durability was experimental.
  • However, see Egbert v. Lippman

Egbert v. Lippman

  • It was public use to allow a close friend to wear an invented corset, under her clothes.
  • the use was not really that public, but it was not for the purposes of experiment.

Lough v. Brunswick Co.

  • inventor came up with a new part on a boat motor
  • he then gave it to a few of his friends to see how it would work
  • whether a use is experimental is a question of law, examined by the totality of the circumstances
  • such factors include:
    • the number of prototypes and duration of testing
    • whether records or progress reports were made concerning the testing
    • the existence of a secrecy agreement between the patentee and the party performing the

testing

    • whether the patentee received compensation for the use of the invention
    • and the extent of control the inventor maintained over the testing

In the end, the court holds this use was not experimental, mainly because he wasnt keeping any notes on the alleged experiment.

on sale bar

  • inventor also loses the right to patent if the invention is on sale in the United States more than one year before the inventor files her application.
  • two requirements: 1) the invention must be the subject of a commercial offer for sale and 2)the invention must be ready for patenting, meaning is has been reduced to practice or has been sufficiently described to do so.
    • Recall Pfaff v. Wells Electronics, where inventor accepted a purchase order for his invention. Even though it was not reduced to practice, it was ready for patenting.
  • any commercial sale triggers the bar, even if the invention is far from available to the public.


"Useful": the requirement of utility

  • A modest requirement, met if the invention is capable of providing some identifiable benefit.
  • The benefit need not be socially beneficial, however it must be more than just aesthetic or descriptive
    • Remember Juicy Whip v. Orange Bang, where the use was to deceive customers into thinking that they drink they were getting was from the resovoir tank. This was held to be useful enough.
  • To have utility, the invention must work. Does not mean that it needs to work better than other things on the market. However, it must be capable of fufilling its described function. i.e. you could not invent a machine and say it is useful to fill up a landfill.

The benefit must be specific, substantial, and practical.

  • this requirement is troublesome to many newly discovered genes or chemicals- it is not exactly know what they do.
    • there is also a tension with the novelty requirement in scientific fields- may invent something new but it takes more than a year to figure out what it is useful for, and by that time the one year clock has run and your invention is barred from being patented.

Nonobviousness

  • §103 Non-Obviousness. Patent may not be obtained if differences b/w subject matter and prior art are

such that the subject matter would have been obvious at time invention was made to person having ordinary skill in the art to which said subject matter pertains.

Graham v. John Deere factors:

  1. The scope and content of the prior art are to be determined
  2. Differences between the prior art and the claims at issue
  3. The level of ordinary skill in the pertinent art
  4. In addition to the 3 above factors, must also look to secondary considerations such as commercial success, long felt but insolved needs, failures of others, etc.

scope of the prior art

  • in addition to the § 102 requirements (all prior art at the time of the invention), scope is restriction by §103 requirement that it be "reasonable pertinent" to the invention.
  • Ask yourself if the reference falls within the field of the inventor's endeavor.
  • If it its not, ask whether the reference is reasonably pertinent to the particular problem with which the inventor is involved.

Differences in the prior art and the claims at issue

  • note there must be differences, or the invention would not be novel
  • differences can be of two types
  1. the invention adds elements that do not appear anywhere in the prior art. In this case, the question is whether adding the missing elements would have been obvious to a person skilled in the relevant art
  2. all of the elements of the claimed invention exist in the prior art, but not in a single reference. Here the question is whether it was obvious to combine the references.

level of ordinary skill in the pertinent art

5 factors for determining the ordinary level of skill in the art

  1. The types of problems encountered in the art
  2. The prior art solutions to those problems
  3. The rapidity with which innnovations are made
  4. The sophistications of the technology
  5. The educational level of active workers in the field.

The skill of the actual inventor is not relevant. Therefore, an invention could be obvious to the inventor because she is a genius and much smarter than those in her field, but would not be obvious for the purposes of patent law.

Secondary factors

Even after a prima facie finding of obviousness on the first three factors, these factors can rebut that finding. Court look to the following factors

  1. Commercial success
  2. long-felt but unsolved need- if opportunity was there to invent it but no one did, inference exists that it was not obvious
  3. failure of others- if others have tried and failed, there is an inference that it was not obvious
  4. copying- probative when others tried to solve the problem but resorted to copying
  5. unexpected results or properties of the claimed invention- if the results were unexpected, the invention was likely not obvious
  6. skepticism of experts- when experts did not see a solution, the solution was likely not obvious
  7. licensing and acquiescence by others- if competitors licensed the patent rather than trying to solve the problem , suggests that the solution was not obvious to them
  8. adoption by the industry- if the invention is adopted as an industry standard, maybe it was better than anything else out there

KSR International v. Teleflex \

  • court held it was obvious to use an electronic sensor on a gas pedal, where there existed in the marketplace a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for acheiving this advance

Keep in mind that even though an invetion may seem obvious after considering the technical issues (first 3 factors), a strong showing of secondary considerations may show the invention was nonobvious. However, obviousness may be so clearly esatblished by the prior art analysis that the secondary considerations cannot change the result.

Trade Secret -information that 1) derives actual or potential economic value from the fact that it is not known or readily ascertainable by others, and 2) is subject to reasonable efforts to maintain its secrecy

Reverse Engineering: it is ok to do this to some products to figure out how they work Example: recipes, the temperature that you heat things at, the method of manufacturing something

Protects against 2 things: 1) people who have the secret in confidence and reveal it, 2) people who try to sneak in and find out your trade secret by trespassing on your public property

Trade secrets are indefinite

Trade Secret Requirements 1) Secrecy: not generally known or "readily ascertainable" 2) Valuable: worth something 3) Value from secrecy: gets its value because it is not generally known 4) Protection: must take "reasonable efforts" to protect the secret

Misappropriation/Infringement Improper means: cannot violate "generally accepted standards of commercial morality" Breach in confidential relationship: most typical in the employee context; agent-principal relationship; partnership relationship; or a fiduciary relationship (like attorney-client or doctor-patient. Relationship can be express or implied, or a contractual agreement that the recipient will not disclose the secret without permission.

To sum it up: If you enter into a confidential relationship and do not keep information you get secrete, you are liable for misappropriation.

Elements of misappropriation 1) Is there a secret? 2) Did you enter a "confidential relationship"? 3) Did you "use this information in violation of the relationship"?

Defenses: Reverese Engineering: reverse engineering is a fundamental public policy good, but the product must be obtained form the open market

Employees: Most courts find a confidential relationship in the employee/employer context. You can't take documents outside the building with you, but you can take "general knowledge" (most states).

Employee argument: 1) the information at issue was not a trade secret of employer (because it was information Employee knew independently, was already genreally known in the industry, was readily available from public sources, or was not sufficiently protected because employer did not take reasonable measures to keep the information secret. 2) the employee had no duty of confidentiality (signed no confidentiality agreement and was not in a position in which confidentiality would be implied), so her disclosure and use of the information is not wrongful

Non-competitive agreements: they are enforceabel if they are "reasonable

Best Remedies: Injunction Contract remedies ("reasonable royalty" "reasonable fee") Tort remedies: baseline monetary remedies of either actual loss to P or actual gain to D Property remedy: injunction (presumative entitlement to an injunction Criminal punishments: punitive damages awarded for up to 3x loss in case of willful misappropriation

TRADEMARK

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